Using potentially "trademarked" words of myth?!

[Christoffer Lernö]

I wasn't really sure where to put this, but it does pertain to the design of games or more specifically setting.

Let's say I want to use the name Gandalf in my game. Peregrine mentioned that this name was trademarked(?) What about Thorin, Gloin and the rest of the dwarves mentioned in Poetic Edda?

If that's really true, does it mean someone can trademark "Earth" so I can't make a setting that mentions that particular place in my rpg? Sounds absurd.

There has to be something about "prior use", right? Gandalf and the dwarves are quite clearly a case of names existing before Tolkien (about a thousand years actually).

What if I write a book about a supernatural entity which calls himself "God" and says he created the world. Can I prevent people from using that word in books too?

[Ron Edwards]

Hi Cristoffer,

As soon as I read, "... use 'Gandalf' in my game," I thought Whaaaatt?? And then I realized what you were saying - and it struck me.

Yeah. You're right. And I don't know the answer at all.

It may be a simple public domain issue, but it may not, once the name (public domain or not) is associated with a commercial enterprise that's not in the public domain. And that may not be a legal matter so much as a legal-clout matter.

Wasn't there a bit of a stink about this regarding orcs/orks some time ago? TSR played many a nasty copyright-claim trick on smaller companies in the 1980s.

Sigh, I guess it's back to the copyright lawyers, who to a man are arguably the least helpful people ever to have a discussion with, in terms of knowing what to do.

Best,
Ron

[Christoffer Lernö]

Tolkien's estate apparently has the copyright on the word "orc":

So you can't use it for:

IC 016. US 002 005 022 023 029 037 038 050. G & S: printed matter namely, posters; wall charts; photographs; stationery; art prints; calendars; playing cards; trading cards; bookmarks; sticker books; stickers; postcards; writing paper; note books; note pads; note cards; folders; series of fantasy books and magazines, wrapping paper; instructional and teaching materials, namely, pencils, pens, rulers, erasers, paperweights; and holders for office supplies, namely, pens, pencils and paperclips

IC 025. US 022 039. G & S: clothing, namely t-shirts and sweatshirts, Halloween costumes, costumes for use in role playing games, footwear and headwear

IC 028. US 022 023 038 050. G & S: toy action figures and accessories therefor; toy figures; card games; equipment sold as a unit for playing card games; puzzles, except crossword puzzles; chess sets; role-playing games and accessories; action skill games; board games; equipment sold as a unit for playing board games; equipment sold as a unit for playing action type target games; equipment sold as unit for playing hand held electronic games; collectible toy figures; electronic toys, namely, electronic action toys; dolls and accessories therefor; collectible marbles and accessories; electronic and non-electronic plush toys; mechanical action toys; toy boxes; cases for action figures; hand held unit for playing electronic games; costume masks; puppets; role playing game equipment in the nature of game book manuals; soft sculpture toys; toy weapons, namely toy swords, knives, maces, axes, daggers, or bows and arrows; arcade games; electronic educational game machines for children; equipment sold as a unit for playing a memory game; fantasy character toys; LCD game machines; positionable toy figures; talking toys; toy watches; transforming robotic toys; and Christmas tree ornaments

Now don't go and make Christmas tree ornament called Orc. They might sue! Or?

EDIT: I just sent of an e-mail to the US patent and trademark office about this. If I get some response I'll keep you posted about it.

(Hmm... I'm gonna trademark God, Jesus, Christ, Allah, Satan, Lucifer, Angel, Good and Evil so they can't be used in any book without violating my trademark if that's true. Oh yeah, I want a tax on people breathing air too)

[Reimer Behrends]

Tolkien's estate apparently has the copyright on the word "orc":

That's a trademark, not a copyright. And that doesn't mean that you cannot use the word "orc". It only means that you cannot use it in a way that infringes upon the trademark of the owner, as outlined primarily in 15 U.S.C. Sec. 1114 and also (trademark dilution) in 15 U.S.C. Sec. 1125.

Cf. http://www.phoenyx.net/fudge/2002/07/msg00543.html for a quick overview. Also http://www.phoenyx.net/fudge/2002/07/msg00587.html and http://www.phoenyx.net/fudge/2002/07/msg00591.html.

-- Reimer Behrends

[Christoffer Lernö]

I sent this to the patent's office:

Hello,

I have a question concerning the use of trademarks.
If I write, well let's say a game. In this game I
have a person going by a certain name.

Further on, let's assume this name is trademarked
for use in games.

In this case, am I in some way potentially violating
this trademark assuming that I *DO NOT* use this
name as a title for my game.

To put names to it. Let's say I make a game called
"X". Within this game there is a person named "Bob".

However, let's assume someone has already
trademarked the name for use with games. In other
words, "Bob" is trademarked.

Now my game is not called "Bob", it's simply called
"X". However it has a character called "Bob". Is my
game in violation of the "Bob" trademark?

Sincerely,

Christoffer Lerno

And got this reply:

The United States Patent and Trademark Office is unable to respond to this question  via e-mail.  Please call General Information Services at 800-786-9199 or 703-308- 4357 for assistance.  The U.S.  Patent and Trademark Office is open from 8:30 AM  until 5:00 PM, Eastern time.  Additionally, there are Customer Service  Representatives available to take your call until 8:00 PM, Monday through Friday  except Federal holidays.

Is there anyone out there who don't need to make an international call to get to these guys who could ask the question for me?

[J B Bell]

In general, trademarks are limited to a specific use.  Infringement loosely means that you are on their territory such that their customers might confuse your product, character, or whatever, with theirs.  So, we have York air conditioning systems, and York peppermint patties.  Both are trademarked in their specific domains.

Gandalf is only a name and does have prior art.  If you make a character named Gandalf who is not a wizard, or who is short, fat, and bald, it's much easier to argue that he can't be confused with Tolkien's well-known character.

But what it comes down to is, if you tempt one of the big guys to come after you, they probably will.  And what you want to ask yourself is, can you afford it?  Lucasfilm sued FASA over their use of the term "droid," which is a Lucasfilm trademark.  They don't deserve the trademark, there is prior art going back to when Lucas was in diapers, but FASA could not afford to mount a defense, so they caved, and happened upon the serendipitously much cooler name Battletech. If your game is strongly based in the Eddas, and that shows, you'll have a good defense. And if you can afford your day in court, a win would, IMHO, be likely. But you have to be able to go the distance.

I'm not saying don't do it; just do it with your eyes open.  Incidentally, "orc" in the sense of a nasty, pig-like, basically evil creature is indeed a coinage of Tolkien's, though he took it from the latin orca, which means "killer," more or less.  I think the absurd length of time companies and estates can hold onto patents and copyrights anymore is damaging to artistic creativity, but arguably "orc" really does properly belong to Tolkien, even if his characters' names aren't new.

--JB

P.S. When you vote, ask your candidates about their positions on intellectual property--this area really needs major reforms, especially the rubber-stamp patent office.

[Christoffer Lernö]

Ooops, crossposted.

Anyway, this seems to say that as long as I don't advertise my game as "Has both Gandalf, Thorin and Gloin in it" there's not a problem. The orc thing might be a problem if I advertise my game with "has over 50 unique types of orcs!" but just having it in the game should be ok?

[Mike Holmes]

I think that TSR may have gotten away with Orcs precisely because they made them a separate race from goblins. Which makes D&D distinctly different from Middle Earth. In any case, I would assume that as long as your orcs aren't also goblins, that you're safe in using that term.

Mike

[Valamir]

The basic rule of thumb that will keep you out of most trouble as an amateur is simply to ask yourself "why are you using that word".  Is there a defendable sensible legitimate reason why that word is appropriate.  Or are you just using it because of the connection it already has hoping to glean some benefit from association.

When in doubt...just use something else.

[Gordon C. Landis]

Anyway, this seems to say that as long as I don't advertise my game as "Has both Gandalf, Thorin and Gloin in it" there's not a problem. The orc thing might be a problem if I advertise my game with "has over 50 unique types of orcs!" but just having it in the game should be ok?

I posted about this in another thread recently, and others have said the same thing here, but just to stress - by "OK", what are you asking?  Are you asking "is this an obvious infringement of trademark?"  Depends - if you have a long-bearded, pointy hat-wearing guy with immense magic power and call him Gandalf but say "he's not THAT Gandalf," you're probably in trouble no matter if you advertise it or not.  If you just call your King of Mellowmere Gandalf the Wise, you're probably not obviously infringing on the trademark.

But the Tolkien Estate might see it different, and come after you like (apparently) Lucas went after FASA over "droid."  And they'd probably "win," because you can't afford to fight their lawyers, regardless of what the actual legal realities are.
Or you could be safe, because it's just not worth their time to go after you.  They'd rather try and stop the flow of unlicensed chocolate Frodo's from China than mess with you.

Or you could pay a lawyer to draw up a legal opinon as to why you're NOT infringing, and send that opinion out as the response if you get challenged.  I've known folks who did this (NOT in RPGs), and the Estate in question stopped bothering him.  But I've heard about other cases where that was the start of a long, expensive legal battle . . .
It's all very aggravating - I work in the area of IP (as in, I do computer stuff in that business area, not "I have training and knowledge about these issues"), and the unrelenting message is always "there is no simple answer, it's all about how you can interpret the statutes, and you should really hire a lawyer if you want to do this right."  Which is a good way for those IP folks to ensure they always have an income. ;-(

Gordon

[greyorm]

Here:

I'd like to see what the Tolkien estate would do about a bunch of enraged Asatru ticked off because said estate is attempting to tell ANYONE that the forementioned estate owns a bit of traditional Asatru lore (ie: the names of the dwarves in the Voluspa).

Yeah, I'd love to see that.

Hence, use 'em. They're public domain and have been for, oh, a few thousand years.

If you get any letters from any fidgety estates, write to any Kindred or Troth you can find about the estate's attempt to claim copyright on dwarves named "X." You may not have the money or power to handle it on your own, but when you interest the right folks, you'll have no lack of wealth and allies to combat the stupidity.

As to "orcs:" considering the common usage it has in many fantasy games and books, it has lost its copyright status (reference: kleenex and xerox).

More simply, this is about fear-tactics ruling law instead of law. Don't let it. Just keep the stakes in mind: that is, it doesn't affect just you when the copyright gestappo shows up on the doorstep and wins. I can't say anymore than that, because such a decision is completely personal on your part and your own call.

[greyorm]

Wasn't there a bit of a stink about this regarding orcs/orks some time ago?

I believe you are recalling the issue that arose with John Wick's "Orkworld" and another company which uses the term "ork" for its orcs (Games Workshop?).

They worked it out peaceably...and note: "Orkworld."

[Christoffer Lernö]

Orc, incidentally, isn't a word Tolkien came up with either in case someone mistakenly believed that. In fact Tolkien did a good job borrowing from norse (and other mythology) for names. I don't think that was a bad thing. In fact I find it a good example of one should strive for instead of making unpronouceable fantasy-names.

What's annoying is if someone decides that despite Tolkien borrowed these  names they are suddenly "ownable" by the Tolkien estate.

Like you said Raven, it's not endorsed by the law but that doesn't mean people can't scare you with legal action.